Ex Parte Bittar

Patent Trial and Appeal Board

Sep 19, 2016

13095420 (P.T.A.B. Sep. 19, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/095,420 04/27/2011 Michael S. Bittar
36177 7590 09/20/2016
KRUEGER !SELIN LLP
P. 0. BOX 1906
CYPRESS, TX 77410-1906
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
1391-623.29 2568
EXAMINER
SCHINDLER, DAVID M
ART UNIT PAPER NUMBER
2858
MAILDATE DELIVERY MODE
09/20/2016 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL S. BITTAR
Appeal2015-003022
Application 13/095,420
Technology Center 2800
Before GEORGE C. BEST, WESLEY B. DERRICK, and LILAN REN,
Administrative Patent Judges.
REN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134 from a Rejection2 of claims
1-7 and 10-16. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm for reasons well-stated by the Examiner.
1 The real party in interest is identified as Halliburton Energy Services, Inc.
(Appeal Brief, filed June 27, 2014 ("App. Br."), 3.)
2 Final Office Action mailed September 30, 2013 ("Final Rejection"; cited as
"FR").
Appeal2015-003022
Application 13/095,420
CLAIIvIED SUBJECT IvIA TTER
The claims are directed to "method and apparatus for determining the
horizontal and vertical resistivities and the relative dip angle of a borehole in
an electrically anisotropic earth formation." (Spec. 2, 11. 3-5.)3 "More
specifically, this invention relates to an electromagnetic wave induction
technique for measuring resistivity using a tool having an antenna that is
disposed within a plane which is inclined with respect to a plane that is
normal to the axis of the tool." (Id. at 2, 11. 5-8.) The '420 Specification
provides that "[a ]lthough this invention is primarily intended for MWD or
L WD applications, the invention is also applicable to wireline and possibly
other applications." (Id. at 7, 11. 12-14; Abstract.)4
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A logging while drilling tool, comprising:
a tool body configured to couple into a drill string, the tool body
having a longitudinal tool axis;
a first transmitter antenna extending circumferentially in a first
cutout around the tool body, the first transmitter antenna
configured to transmit an electromagnetic wave into an earth
formation surrounding a borehole when the tool is used in a
logging while drilling operation;
a first receiver antenna extending circumferentially in a second
cutout around the tool body, the first receiver antenna configured
to receive an electromagnetic signal from the formation that is a
result of the electromagnetic wave from the transmitter antenna,
3 Application 13/095,420, Electromagnetic Wave Resistivity Tool Having A
Tilted Antenna For Determining The Horizontal And Vertical Resistivities
And Relative Dip Angle In Anisotropic Earth Formations, filed April 27,
2011. We refer to the '"420 Specification," which we cite as "Spec."
4 "MWD" stands for "measuring while drilling" and "L WD" stands for
"logging while drilling." (Spec. 5, 1. 3.)
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Application 13/095,420
and wherein at least one of the first transmitter antenna and the
first receiver antenna extends in a plane that is not orthogonal to
said tool axis; and
processing circuitry operably coupled to receive a first input
signal resulting from receipt of said electromagnetic signal at the
first receiver antenna, the processing circuitry configured to
determine at least one formation property in response to said
input signal.
(Claim Appendix, App. Br. 23 (emphasis added).)
REFERENCES
The Examiner relies upon the following references in rejecting the
claims on appeal:
Bartel
Sato
us 5,278,507
us 5,508,616
REJECTIONS
Jan. 11, 1994
Aug. 16, 1996
Claims 1-7 and 10-16 stand rejected under 35 U.S.C. §103(a) as
being unpatentable over Bartel and Sato. (FR 14; see, e.g., Ans. 2-62.)5
OPINION
Upon consideration of the evidence on this appeal record and each of
Appellant's contentions, we find that the preponderance of evidence on this
record supports the Examiner's conclusion that the claims are unpatentable
over the applied prior art. We sustain the Examiner's section 103 rejections
essentially for the reasons set out by the Examiner in the Answer.
We add the following for emphasis.
5 Examiner's Answer filed October 28 2014 ("Ans.").
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Application 13/095,420
F"'f-i • -.c:.. ctazm 1v
The Examiner finds that Sato "relates to an apparatus for directional
induction logging" which "when carried out as a resistivity sensor in the
MWD" (i.e., the "'Measurement While Drilling' technique for making
measurements during drilling a borehole"), the invention makes it "possible
to drill a borehole without departing from a desired formation." (FR 14
(citing Sato, 1:12-13); Sato, 1, 11. 25-33.) Sato discloses, among others:
[A Jn arrangement comprising at least one transmitting coil 1
and at least one receiving coil 2, which are disposed along the
axis 18 of a borehole 7 such that these coil face each other in an
inclined fashion relative to each other ... , thus permitting
survey of electric characteristics of the formation in the specific
direction and the circumferential direction in a range of several
meters around the borehole.
(Sato, 2, 11. 50-59.) Sato illustrates multiple embodiments of the disclosed
arrangement one of which is "applied to a survey apparatus for drilling a
horizontal borehole" including "one transmitting coil" and "one receiving
coil" that are not orthogonal as well as a "transmitter" and a "phase sensitive
detector." (FR 14 (citing Sato, FIG. 8); Sato, 8, 11. 39--41, 55-56.)
The Examiner also finds that Bartel discloses certain configurations of
how transmitters and receivers may be placed on "a well logging apparatus
adapted to be suspended in a drill string." (FR 14-15 (citing various
portions of Bartel including 6:58-63 & FIG. 2).)
Based on the combined teachings of Sato and Bartel, the Examiner
concludes that a skilled artisan would have found it obvious "to modify Sato
to include [the recited configurations of] a first transmitter antenna ... , a
first receiver antenna ... as taught by Bartel in order to secure the antennas
6 Claims 2-6 stand or fall with claim 1. (App. Br. 10.)
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Application 13/095,420
to the tool [body] in a manner that protects the antenna from the borehole
environment during drilling operations." (FR 15.)
Appellant argues that Sato does not teach or suggest "a tool body
configured to couple into a drill string" as recited in claim 1. Appellant
presents a Declaration from the named inventor Mr. Michael S. Bittar and
argues that the Declaration shows that Sato' s disclosure is limited to a
wireline tool or an induction logging tool which is not "suitable for a drill
string." (App. Br. 11.)
Mr. Bittar7 acknowledges that Sato expressly discloses that Sato's
"apparatus could be 'applied to a sensor for MWD. "' (Deel. ,-i 6; see Sato, 8,
11. 11-15 ("when the apparatus is applied to a sensor for MWD [], it
constitutes a navigation tool for drilling a borehole without getting out of the
intended formation").) Mr. Bittar does not refute that Figures 7 and 8 of
Sato show "a survey apparatus for drilling a horizontal bore hole." (See
Sato, 7, 11. 35-36.) Mr. Bittar also does not refute Sato's disclosure that
applying Sato's transmitters in the MWD context "makes it 'possible to drill
a borehole without departing from a desired formation."' (See Sato, 1,
11. 25-33.) Mr. Bittar, however, disagrees with Sato and considers Sato's
express disclosure "unjustified and implausible." (Deel. ,-i 6.) Mr. Bittar
reasons that because "non-trivial adaptations would have been necessary to
derive 'a sensor for MWD' from Sato's wireline tool," the "average
practitioner ... would have considered Sato's assertion implausible at the
time." (Id.)
7 Mr. Bittar declares that an "attached curriculum vitae" provides his
background and experience. (Deel. ,-i 1.) The record before us, however,
does not appear to include a curriculum vitae.
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Application 13/095,420
From the outset, we note that the sole claim limitation disputed on
appeal is "a tool body configured to couple into a drill string." Claim 1 does
not recite a "tool body" "suitable" for a drill string in an MWD context. The
'420 Specification in fact provides that "[a ]lthough this invention is
primarily intended for MWD or L WD applications, this invention is also
applicable to wireline and possibly other applications." (Spec. 7, 11. 12-14;
Abstract.) Appellant's argument for whether Sato's express disclosure may
be "applied to a sensor MWD" is not based on limitations appearing in the
claim. See In re Self, 671F.2d1344, 1348 (CCPA 1982).
We further note that Appellant also does not identify any
Specification support for the proposition that claim 1 must be interpreted as
requiring a particular function of the "tool body" other than being
"configured to couple into a drill string." "'Functional' terminology may
render a claim quite broad. By its own literal terms a claim employing such
language covers any and all embodiments which perform the recited
function." In re Swinehart, 439 F.2d 210, 213 (CCPA 1971).
To the extent that Appellant and Mr. Bittar disagrees with Sato's
express disclosure, prior art patents are presumed enabled and operative, and
Appellant bears the burden to offer evidence to show sufficiently that Sato' s
disclosure regarding application in the MWD context is not enabling. In re
Sasse, 629 F.2d 675, 681 (CCPA 1980); In re Antor Media Corp., 689 F.3d
1282, 1287-88 (Fed. Cir. 2012). "Opinion testimony rendered by experts
must be given consideration, and while not controlling, generally is entitled
to some weight." Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 77 6
F.2d 281, 294 (Fed. Cir. 1985) (citations omitted). "Lack of factual support
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Application 13/095,420
for expert opinion going to factual determinations, however, may render the
testimony of little probative value in a validity determination." Id.
In this case, Mr. Bittar does not provide factual evidence (e.g.,
experiment data, research, literature, or other evidence related to Sato' s
disclosure) to corroborate the opinion that Sato' s express disclosure is
"unjustified and implausible." (Deel. ,-i 6.) The fact that Mr. Bittar
recognizes the specific "adaptations ... necessary to derive 'a sensor for
MWD' from Sato's wireline tool" shows that the disclosure is indeed
enabling. (See id. ,-i 7.) To the extent that these adaptations may be "non-
trivial" as Mr. Bittar sees it, the fact that Mr. Bittar is able to formulate these
adaptations nonetheless contradicts the assertion that Sato' s express
disclosure is "unjustified and implausible." (See id. ,-i 6.)
"Obviousness is determined from the vantage point of a hypothetical
person having ordinary skill in the art to which the patent pertains. . . . The
legal construct also presumes that all prior art references are available to this
hypothetical skilled artisan." In re Roujfet, 149 F.3d 1350, 1357 (Fed. Cir.
1998). Although Sato's disclosure may not have been available to Mr.
Bittar, Mr. Bittar has not proffered corroborating evidence to persuade us
that Sato' s express disclosure is in fact wrong and not enabling. See In re
Etter, 756 F.2d 852, 849-60 (Fed. Cir. 1985) (en bane) (opinion affidavit
asserting the reference disclosed obsolete technology was correctly
characterized by the board "as merely representing opinions unsupported by
facts and thus entitled to little or no weight.").
As the Declaration fails to point to any corroborating factual evidence
suggesting that Sato' s express disclosure regarding the applicability to "a
sensor for MWD" is not enabling, we agree with the Examiner's assessment
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Application 13/095,420
that the Declaration does not provide sufficient factual evidence to rebut the
presumption that Sato is enabled. After all, an "expert opinion is no better
than the soundness of the reasons supporting it." Perreira v. Sec '.Y of the
Dept. of HHS, 33 F.3d 1375, 1377 (Fed. Cir. 1994).
In other words, it is the Examiner's position that the Declaration has
been considered with the understanding that it is Mr. Bittar's opinion set
forth therein. The Examiner has provided extensive factual findings and
detailed analyses to explain why the Declaration is not persuasive. (See FR
7-14; Ans. 13-21.) Mr. Bittar does not address-much less identify
reversible error in-many of the Examiner's findings on this issue. For
example, Mr. Bittar does not respond to the Examiner's finding that multiple
additional prior art references (e.g., U.S. Patent No. 4,940,943, etc.)8 show
that implementing certain components of a wireline tool (e.g., an antenna) in
an MWD context and vice versa has been known in the prior art. (See Deel.
,-i 6; see generally Deel. ,-i,-i 3-8; FR 8-9.)9 Mr. Bittar does not respond to the
Examiner's finding that any unpredictability in the prior art is not based on
applying Sato's transmitters "to a sensor for MWD" (Sato, 8, 11. 12-13) but
is instead caused by "an issue of spacing from one sensor to another" which
8 These additional references have not been applied to the obviousness
rejection but are presented in response to the Declaration regarding whether
Sato's disclosure is "unjustified and implausible." (FR 9; see Declaration
,-i 6.)
9 Appellant argues that "Sato has deficiencies that are not cured by the
addition" of these references. (App. Br. 15.) We note that Appellant
appears to have conflated the issues of enablement and obviousness. The
Examiner finds that Sato' s disclosure is enabling and presents these
references in support of the enablement finding. (FR 8-9.)
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Application 13/095,420
is unrelated to the IvIWD context. (See generally Deel. iii! 3-8; FR 7, 10-11;
Ans. 18.)
We further note that Appellant appears to have conflated the issue of
whether Sato's disclosure is enabling and the issue of whether the combined
teachings of Sato and Bartel would have rendered claim 1 obvious. For
example, Appellant argues that Sato' s disclosure in the MWD context "was
not known and was not obvious" which is said to be supported by the
Declaration stating that "Sato's assertion is unjustified." (App. Br. 11.)
Whether Sato's disclosure was obvious or known at the time of Sato's
invention, of course, does not rebut presumption of enablement. As another
example, Mr. Bittar states that "Sato' s assertion [is] implausible" because
"[i]t was far from clear that tilting Bartel's coils would produce the effect
sought by Sato." (Deel. ,-i 8.) As the Examiner points out, whether Bartel's
coils may be tilted does not support Mr. Bittar's conclusion that "Sato's
assertion [is] implausible." (See FR 13-14.)
Appellant next argues that Sato cannot be combined with Bartel to
teach or suggest "a tool configured to couple into a drill string" as recited in
claim 1. Appellant argues that Bartel discloses an MWD tool and "[h ]aving
described only wireline tool embodiments" as illustrated in Figures 7 and 8
of Sato, "Sato speculates as to the applicability of its logging techniques to
MWD environments." (App. Br. 11-12.) Appellant also argues that "the
induction logging technique of Sato" is unsuitable for MWD, and a skilled
artisan "would not consider its teaching to have any relevance to MWD tool
development." (Id. at 14.)
As we found with regard to the Declaration, Appellant's assertion that
Sato' s disclosure in the MWD context is "misguided" and "speculative"
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Application 13/095,420
/~ ., _.,,_ 1 (\ • , , ., ., ro , ., • ., , ., • , • r"I , -.
~Kep1y L)rn 1s not supponea Dy tactual ev10ence comramctmg :sato'S express
disclosure that the transmitters may be "applied to a survey apparatus for
drilling a horizontal bore hole." (See Sato, 7, 11. 35-36 (describing the
embodiments in Figures 7 and 8).) Appellant does not explain why Sato's
disclosures "must be interpreted in the context of FI Gs. 7 and 8" as being
limited to a wireline tool while ignoring Sato's statement that these figures
show "a survey apparatus for drilling a horizontal bore hole." (See Sato, 7,
11. 35-36; see also App. Br. 11.)
To the extent that "no drilling apparatus ... and no drilling is taking
place" in Figures 7 and 8 of Sato and that Appellant believes "significant
structural changes" are necessary to apply the specific embodiments in these
figures in the MWD context (App. Br. 11-12), we note that "a patent need
not enable information within the knowledge of an ordinarily skilled artisan.
Thus, a patentee preferably omits from the disclosure any routine technology
that is well known at the time of application." Chiron Corp. v. Genentech
Inc., 363 F.3d 1247, 1254 (Fed. Cir. 2004) (citations omitted). As we found
supra, Appellant does not refute the Examiner's finding that multiple
additional prior art references support show that "it was known to construct
wire line tools and MWD tools using the same geometrical guidelines with
regard to the tool and cutout portions for the antennas" and that how to
"implement the antennas" in both MWD and wireline tools" was known in
the art. (Ans. 10-11; FR 8-9; see App. Br. 15.) Given Sato's express
disclosure that when the transmitters are "carried out as a resistivity sensor
in the MWD," Sato's invention makes it "possible to drill a borehole without
departing from a desired formation" (Sato, 1, 11. 12-13, 11. 25-33), and that
10 Reply Brief filed December 29 2014 ("Reply").
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Application 13/095,420
Appellant identifies no reversible error in the Examiner's fact findings and
technical analyses, we are not persuaded that the Examiner's application of
Sato to claim 1 is a "conjecture" as asserted by Appellant. (See Reply 2.)
We are also not persuaded that there lacks a reasonable expectation of
success or that the Examiner engaged in impermissible hindsight as these
assertions are also based on the premise that a skilled artisan would not have
found claim 1 obvious "due to Sato ... only speculatively suggesting a
MWD application." (See App. Br. 15, 16.) As we found supra, Appellant
has not rebutted the presumption that Sato' s express disclosure of
application in the MWD context is enabling and Appellant's argument,
based on the premise that "Sato' s discussion of MWD is speculative only"
has not persuaded us of reversible error. (See App. Br. 15.)
Even assuming Sato's disclosure has been shown to be non-enabling,
"a non-enabling reference may qualify as prior art for the purpose of
determining obviousness." See Symbol Techs., Inc. v. Opticon, Inc., 935
F.2d 1569, 1578 (Fed. Cir. 1991). Furthermore, when a skilled artisan
assesses Sato' s express disclosure with regard to applications in the MWD
context, the artisan may use "logic, judgment, and common sense" without
requiring "explication in any reference or expert opinion." Perfect Web
Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1329 (Fed. Cir. 2009).
Here, the fact that Mr. Bittar understands the specific adaptations
necessary to apply Sato' s disclosure to the MWD context (Deel. ,-i 7) shows
that there is a reasonable expectation of success. Appellant does not respond
to the Examiner's finding that Sato' s disclosure "teaches those in the art
enough that they can make and use the invention without 'undue
experimentation."' (Amgen, Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d
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Application 13/095,420
1313, 1334 (Fed. Cir. 2003); see Reply 1-2; Ans. 16-17.) No reversible
error has therefore been identified in this aspect of the obviousness analysis.
Appellant next argues that the Examiner erred because the "proposed
modification to Sato involves more than merely adding Bartel's tool body or
tool body cutouts to Sato." (App. Br. 17.) Appellant argues that the
proposed modification would "chang[e] Sato's and/or Bartel's principles of
operation" based on various bodily incorporations of references. (Id.) More
specifically, Appellant argues that the proposed modification "is
incompatible with Bartel's intended antenna orientation" which is
orthogonal. (Id.) Appellant argues that the proposed modification would
require multiple changes to Sato' s wireline logging tool including "changing
Sato' s antenna rotation arrangement, changing Sato' s logger deployment
scheme, changing Sato from an induction logging tool to an electromagnetic
wave resistivity logging tool, and changing Sato's logger tool body" by
using "different coil sizes" and other relevant parts. (Id. at 17-18.)
"The test for obviousness is not whether the features of a secondary
reference may be bodily incorporated into the structure of the primary
reference .... Rather, the test is what the combined teachings of [those]
references would have suggested to those of ordinary skill in the art." In re
Keller, 642 F.2d 413, 425 (CCPA 1981). "The combination of familiar
elements according to known methods is likely to be obvious when it does
no more than yield predictable results." KSR Int'! Co. v. Teleflex Inc., 550
U.S. 398, 416 (2007).
In this case, Appellant has not identified any particular scientific or
engineering principle that would be broken based on the combined
teachings, nor has Appellant specified how the Examiner's proffered
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Application 13/095,420
combination would contravene that principle. (See App. Br. 17-18.) As the
Examiner finds, the changes that Appellant sees as necessary to Sato' s
wireline tool (e.g., changing to an electromagnetic wave resistivity logging
tool, App. Br. 18) are again based on the premise that Sato's express MWD
disclosure is not enabling. (See FR 47-53.) Appellant's argument regarding
the combined teachings of Sato and Bartel is essentially based on the
assertion that Sato's tool cannot be applied in an MWD context which we
have addressed supra. Additionally, Appellant has not identified that either
Sato or Bartel acts to "criticize, discredit, or otherwise discourage" an
apparatus having "a tool body configured to couple into a drill string" which
is the disputed claim term. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir.
2004). No reversible error has been shown in this aspect of the obviousness
analysis.
Claims 7, 10, and 11-16
Appellant argues that the rejection of claims 7, 10, and 11-16 is in
error by repeating the assertion that the Examiner's interpretation regarding
how Sato would be viewed" by a skilled artisan "at the time of the invention
is unreasonable." (App. Br. 20.) Appellant repeats the assertion that there
lacks "a reasonable expectation of success" when combining the references
and that the proposed modification would require "substantial redesign and
changes to Sato's logger tool body." (Id.)
For the reasons provided with regard to the rejection of claim 1, we
sustain the rejections of claims 7, 10, and 11-16.
DECISION
The Examiner's rejection of claims 1-7 and 10-16 is affirmed.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l.136(a). See 37 C.F.R.
§ l.136(a)(l )(iv).
AFFIRMED
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